What Is a Trademark Right in Japan? When It Arises, Scope, Duration and Infringement

"When does our trademark right in Japan actually start?" "Does our home registration count in Japan?" "What can we do if someone copies our brand?"

In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains the trademark right in Japan — when it arises, what it covers, how long it lasts and how it works against infringers — for overseas companies and individuals selling in the Japanese market.

What is a trademark right? Start with "trademark"

A trademark is a sign a business uses to distinguish its goods or services from those of others — a brand name, product name, service name or logo.

In Japan, a trademark can consist of letters, figures, symbols, three-dimensional shapes or combinations of these. Since April 2015, motion marks, hologram marks, color marks, sound marks and position marks can also be registered.

A trademark right is an exclusive right to use a registered mark for specific goods or services. Its effect extends not only to the identical mark but also to similar marks used on similar goods or services.

Trademark registration vs. trademark right

Trademark registration is the procedure: filing with the Japan Patent Office (JPO), passing examination and being entered in the register. The trademark right is the result of that procedure.

If you use a mark in Japan without registering it and someone else has already registered a similar mark, your use may infringe their right. Even prior use is generally not protected unless your mark was already widely known among consumers in Japan. "We were using it first" is not a reliable defense in Japan.

When does the trademark right arise?

The right does not arise when you file. The typical sequence is:

• Filing → formality check → substantive examination → decision of registration → payment of the registration fee → registration (the right arises here) → publication in the Trademark Gazette

Examination takes about 9–12 months under normal examination, or about 2–3 months with accelerated examination (certain requirements apply). A pending application is not a full right, although its filing date gives you priority over later applicants.

What does the trademark right protect?

• You can use the registered mark exclusively for the designated goods/services
• You can exclude others from using identical or similar marks on identical or similar goods/services
• You can seek an injunction and damages against infringers
• You can assign or license the right as a business asset

The right is effective only in Japan. Conversely, your registrations in China, Korea, the EU or elsewhere have no effect in Japan.

For e-commerce sellers, a Japanese registration is also what you rely on when enrolling in brand protection programs and filing infringement reports on Amazon Japan, Rakuten and other platforms.

Why the designated goods and services matter

When you file, you list the goods ("designated goods") and services ("designated services") the mark is used for, together with their class under the Nice Classification (Classes 1–45). The scope of your right is defined by this list.

Japan has its own practice for wording goods and services, so a description accepted in your home country may need adjusting. A list that is too narrow leaves products unprotected; one that is unclear invites an Office Action.

BrandAgent's attorney fees are JPY 25,000 per class at filing and JPY 25,000 per class at registration (excluding Japanese consumption tax, where applicable).

Marks that cannot be registered

• Marks lacking distinctiveness: marks that merely indicate origin, place of sale, quality and so on (e.g. "Hokkaido" for vegetables)
• Marks contrary to the public interest: marks identical or similar to national flags, marks that may harm public order or morality, and marks likely to mislead about the goods or services
• Marks confusingly similar to another's registered mark for identical or similar goods/services

Similarity is judged by looking at appearance, pronunciation and meaning (concept) as a whole. Note that pronunciation is judged as Japanese consumers would read the mark, which can make Latin-letter or Chinese-character marks look "similar" in unexpected ways.

Duration and renewal

A trademark right lasts 10 years from the date of registration and can be renewed every 10 years, any number of times. Unlike a patent, which ends after 20 years, a trademark can be kept alive indefinitely as long as it is renewed.

The JPO does not send reminders, so you need to manage the deadline yourself or have your Japanese attorney do it. Renewal must also be filed through a representative in Japan if you have no address in Japan.

Also keep in mind that a registration can be challenged: anyone may file an opposition within 2 months of publication of the registration gazette, and a mark not used in Japan for 3 or more consecutive years can be cancelled for non-use.

The three functions of a trademark

• Indication of origin: shows which company or brand the goods come from
• Quality guarantee: customers expect consistent quality under the same brand
• Advertising: recognition of the brand itself becomes value

A trademark right is, in essence, a mechanism to protect the goodwill accumulated in your brand.

If your trademark is infringed in Japan

With a Japanese registration, the main options are:

• Sending a warning letter to the infringer
• Filing infringement reports with Amazon Japan, Rakuten and other platforms
• Claiming an injunction (stopping use) and damages

Without a registration, these options are much weaker. Whether a specific use infringes depends on the facts, so please consult us before taking action.

Company registration and domain names are not trademark rights

Registering a company (including a Japanese subsidiary or branch) and acquiring a domain name are separate systems. Neither creates a trademark right. A trademark right arises only by filing with and registering at the JPO.

When should you think about trademark rights?

• Before launching a brand in Japan (search before you finalize the name or logo)
• Before releasing a new product or service in Japan
• Before opening a store on Amazon Japan or Rakuten, or starting advertising
• Before licensing, distribution deals or joint ventures in Japan
• Before and after M&A or business transfers (to check brand assets)

Ideally, act before you spend money on the brand. Registration takes time, so start early.

FAQ

• Q. When does the trademark right arise?
  A. Not at filing, but when the registration fee is paid after examination and the mark is entered in the register.
• Q. How long does it last?
  A. 10 years from registration, renewable every 10 years any number of times.
• Q. Can we stop every use of the same name?
  A. Not necessarily. The scope is defined by the registered mark and the designated goods/services, so the right may not reach unrelated goods or services.
• Q. We used the brand first. Are we protected?
  A. In principle, Japan protects whoever registers first. Limited protection exists for marks that are well known in Japan, but you should not rely on it.
• Q. Is our home-country registration valid in Japan?
  A. No. You need a Japanese registration, by direct filing or by designating Japan through the Madrid System.

Summary

Related articles

• Accused of Trademark Infringement in Japan? How to Respond to a Warning Letter or an Amazon/Rakuten Complaint
• Accused of Trademark Infringement in Japan? What Overseas Sellers Should Check and Do
• Japanese Trademark Renewal: Deadlines, Official Fees and Procedure for Foreign Owners
• Trademark vs Patent vs Design vs Copyright in Japan: What Each One Protects